The Full Federal Court’s decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2025] FCAFC 131 provides long-awaited clarity on how the Australian Patent Office and Australian courts ought to assess the patent-eligibility (manner of manufacture) of computer-implemented inventions (CIIs).
From [125] onwards, the Full Court adopts the approach reflected in the High Court’s “allowing” reasons from Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29 (previous post can be found here) and frames a concise, practical characterisation test. Although the case concerned electronic gaming machines, the principles apply across the board to CIIs and will shape examination, prosecution, and litigation strategy in Australia.
Key Passage
At [131], the Full Court stated:
In our respectful view, it is too rigid and narrow an approach to say that the implementation of an idea in a computer, using conventional computer technology for its well-known and well-understood functions, cannot constitute a ‘manner of manufacture’. … a better way of expressing the point in such cases is to ask whether, properly characterised, the subject matter that is alleged to be patentable is:
(i) an abstract idea which is manipulated on a computer; or
(ii) an abstract idea which is implemented on a computer to produce an artificial state of affairs and a useful result.
Characterisation clarity
The enquiry begins with construing the claims in light of the specification and common general knowledge to determine what the invention is “in substance.” Both over-generalisation (reducing the claim to a mere abstract idea) and over-emphasis on trivial well-known features are to be avoided.
At [127], the Court endorsed the view that the invention must be characterised by reference to all the integers of the claim, taken together. This discourages attempts to strip out conventional features when assessing eligibility.
Branched test for CIIs
In cases for which the characterisation relates to an idea or scheme implemented on a computer or on any other machine equipped with computer hardware, the question is whether the characterised subject matter falls into:
- (i) abstract ideas merely manipulated on a computer (not patentable), or
- (ii) abstract ideas implemented on a computer so as to produce an artificial state of affairs and a useful result (potentially patentable).
This test provides a clearer and more workable tool than the previously debated “technical contribution” standard. This test may further suggest a preliminary step of determining whether the claimed invention involves an abstract idea at all. For example, a claim defining modifications and/or novel technical features in a computer or other device/system architecture may not be considered abstract.
Based on the Full Court decision, the following flowchart may assist patent practitioners and applicants assessing the likelihood that the subject matter in substance defined in a claim relates to patentable subject matter (i.e., a manner of manufacture) in Australia.
Past Guidance
The Court illustrated how this test maps onto existing authorities:
- Patentable (branch ii): curve generation algorithm (IBM), Chinese character input system (CCOM), access control system (UbiPark), digital mobile radio system (Motorola).
- Not patentable (branch i): asset protection method (Grant), securities index method (Research Affiliates), prior learning assessment system (RPL Central), network visualisation system (Encompass), engagement offer system (Rokt).
Special Leave
The Commissioner can seek special leave to appeal to the High Court within 28 days of the issuance of this decision. The Full Court’s approach mirrors the reasoning of the High Court’s allowing judges, and two of the judges of the “dismissing” reasons have since retired. Therefore, whilst it is possible that the Commissioner will seek special leave, there is a very good chance that the Full Court’s test is here to stay.
Recommendations
The Full Court’s decision provides patent practitioners and applicants with an opportunity to undertake a number of practical steps.
Review pending cases
A number of applications may have outstanding examination reports with a manner of manufacture objection. We recommend revisiting these applications in light of this decision. The Full Court’s test provides a clear framework for recasting arguments or amending claims. IP Australia will be bound by precedent to follow the Full Court’s decision. When addressing examiner objections, map the invention into branch (ii) of the Court’s test, highlighting the artificial state of affairs and useful result produced.
Reconsider Australian filings
Applicants in the software sectors have slowed new filings in recent years due to uncertainty. With the high likelihood that the law has now been clarified, there is a strong case to re-examine filing strategies and upcoming opportunities to secure protection in Australia. This may be particularly important for industries (such as gaming) where innovation pipelines have been held back pending greater certainty.
Accelerate examination
The Full Court decision presently settles the law surrounding CIIs and manner of manufacture issues. It may be advantageous to request accelerated examination now, before any possible High Court review (which would take at least 6–12 months if special leave were sought). Such a process will likely reduce prosecution costs.
Drafting guidance
Specifications should set out concrete implementation features: data flows, state changes, device interactions, error-handling steps, or other observable outcomes. Avoid generic statements that the invention “runs on a conventional computer,” which risk branch (i) categorisation.
Authors
Written by Simon Reynolds and Sophie Rankenburg
